DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The amendment dated 05/18/2026 has been considered and entered. The amendment requires the composition to be ISO 68 to ISO 168 which Tsubouchi (JP 2012-31359A) does not teach, thus overcoming the previous rejections in view of Tsubouchi now withdrawn. The response was considered but was not found to be persuasive over the rejections in view of Forbus (US 2017/0145336) which is hereby maintained.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 37 – 46, 51 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Forbus (US 2017/0145336) or, in the alternative, under 35 U.S.C. 103 as obvious over Forbus (US 2017/0145336)
In regards to claim 37, Forbus teaches simple or complex carboxyl esters or mixtures comprising carboxyl end-capped-polytetramethylene glycols (abstract). Forbus teaches a lubricating fluid composition comprising diester of polytetramethylene glycol having a formula (1), wherein the groups R1 and R2 are linear alkyl groups having from 5 to 11 carbon atoms which are analogous to R of the claimed structure, and m is 2 to 4 and analogous m in the claimed structure, and the tetramethylene is a C4 linear alkylene which is analogous to X in the claimed structure, and thus provides the claimed base oil [0004]. Forbus teaches the use of the diester as base oil, and teaches that the R1 and R2 may each contain a branched group at less than 10%, or less than 5% [0018 – 0020].
The composition is suitable for providing the intended use limitation of the claim. Forbus teaches the composition having base oil blends with kinematic viscosity at 40℃ of from 15 to 1500 cSt which overlaps the claimed range [0023]. Even in the presence of optional additives the viscosity is majorly controlled by the oil in the absence of viscosity modifiers, or when they are used at minor amounts. The composition is useful as gear oil [0035].
In regards to claims 38 – 40, Forbus teaches the composition having the claimed limitation as previously discussed.
In regards to claim 41, Forbus teaches the composition having the claimed limitation. The claim is drawn to a product by process step. So long as the ester compound is provided, the means of deriving the alkylene oxy group such as from bio or renewable resources used in forming the ester doesn’t carry patentable weight or is provided for in the ester compound itself.
In regards to claim 42, Forbus teaches the composition having the compound with alkyl carbonyl having the claimed amounts of carbon atoms.
In regards to claims 43 – 46, Forbus teaches the composition having the claimed limitation as previously stated. Product by process limitations is met when the product is taught. The means of providing the alkyl carbonyl groups from renewable or bio-based source does not carry patentable weight or is met as long as the final product is taught.
In regards to claim 51, Forbus teaches the composition which can comprise one or more additive ingredients of the claims [0027]. The additives are present in amounts such that the amount of the base oil will meet or overlap the claimed ranges [0028 – 0034]. For instance, while rust inhibitors are present at 0 to 37%, pour point depressant at up to 10%, dispersant at up to 7% or metal detergent at up to 5%, the additives as a whole may be present at smaller amounts totaling from 1 to 30% or from 2 to 15% [0035].
Response to Arguments
Applicant’s arguments have been considered but was not found to be persuasive.
Applicant argues that Forbus is not directed to the electric vehicles of the claim. The argument is not persuasive.
The claims are drawn to an oil formulation not to an electric engine apparatus. Forbus teaches the oil formulation of the claims and thus anticipates or obviates the claimed formulation. The formulation of Forbus will be expected to be suitable to perform the intended use limitation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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